USPTO efforts to reduce fraudulent applications fail --- these slow down examination

[Matthew D. Asbell, Fordham university adjunct professor of law, Ladas & Parry LLP associate, Eric Perrott, trademark and copyright attorney partner, and Hannah Rosenson, Epstein Drangel LLP partner, 7-6-22, “The USPTO Has Enacted the Trademark Modernization Act: But Now What?,” https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2021-22/june-july/the-uspto-has-enacted-trademark-modernization-act-now-what/, 7-11-24, EP]

Fraudulent Applications Are Slowing Down Examination and Hurting the Integrity of the Principal Register

Amidst a backdrop of registrations issuing without actual use, whether intentionally or not, the USPTO has faced an unprecedented surge of applications over the past few years. It is believed that many of these applications have been motivated by foreign government subsidies and requirements of the Amazon.com Brand Registry, but there have also been practitioners and organizations adopting very low-cost, high-volume business models in handling U.S. trademark applications for their customers.

The USPTO has taken a number of steps, including requiring U.S. licensed counsel for foreign-domiciled applicants and registrants, implementing a user verification system for access to U.S. trademark application and registration filing, and sanctioning practitioners and organizations that violate the USPTO rules and website terms and conditions. Still, many applications slip through and end up registered. The USPTO has addressed other efforts toward cleaning up the register, such as by implementing auditing of use evidence in a random selection of registrations due for maintenance or renewal and imposing a fee for deletions occurring as a result.

Despite these efforts, the register remains cluttered by registrations for marks that are not properly in use for some or all of the goods and services recited. This impacts the ability of legitimate applicants to clear and register new marks. Moreover, legitimate applicants have not been motivated to challenge such registrations because of the costs, risks, and efforts required to do so. The clutter has also slowed the period between the filing of an application and its initial examination (so-called “first action pendency”) from between two and three months in 2020 and beforehand to nearly eight months as of the second quarter of 2022.